Reasons Why Your Trademark Application is Getting RejectionsJune 20, 2022 By Ajita Sharma
Have you recently received the status “REJECTED” for your trademark application? Then you do not need to stress out because it is quite common to get rejected on the very first attempt, but it is also possible to turn your refusal into acceptance with some prep work. So, here we are today with a guide to make you aware of some grounds on which your trademark application is facing rejection.
Definition, Scope & Significance of Trademark
A trademark is like an emblem you receive to signify that a particular idea, product, or service is solely yours.
Any Intellectual Property be it a creation of the mind, a piece of artwork, writing, design, music, or a unique product or service, that has been conceptualized and created by an individual or a group via perception, knowledge, skills, and above all inventiveness, needs to be protected, and the rights that help them safeguard are - Intellectual Property Rights (IPR).
There are multiple ways to establish your IPR such as copyright, trademark, and patent, but, in this article, we plan to focus only on trademark, its registration, and the reasons that lead to its rejections. But, before getting into details, here's what a trademark means and why it is necessary to have one.
The definition of “trademark” under Section 2(1)(zb) of The Trade Marks Act, 1999 means any sign, logo, phrase, design, or a combination of all graphically represented to create a unique identity, to distinguish from the competitors, to help customers identify your brand from similar ones, and to safeguard your thoughts and ideas from being duplicated or misused.
It is like a token of protection that can be acquired by an individual or a company to legally protect and have the complete ownership of a particular product, idea, or service under the Trademark Act, 1999 and common law. Although a tedious process, registering your trademark is something you must never think of skipping because, without it, a brand is at a high risk of getting exploited. With a trademark, you will not only have a distinctive identity but also will be able to build trust among customers, market yourself well, and enjoy a respectable position in the market as well as in the hearts of the customers.
Types of Trademark
There is a mark for everything, but knowing under which category your trademark falls is an important step because many rejections happen due to the silly mistake of applying for the wrong class. Here are a few mark categories:
- Shape marks
- Logos and symbols
- Collective marks
- Series marks
- Color marks
- Sound marks
- The Certification mark
We Know, The Pain is Real
Trademark registration is a significant step for any individual or a brand and, to get those exclusive rights, one goes through the entire process of application with a great deal but, during the procedure of registry, when the officer in charge scrutinizes the application. If the trademark is found to be infringing any kind of law or other registered marks in any manner, it goes straight down the drain.
For a trademark application to pass the test of registry, it must meet certain criteria to gain trademark protection such as:
- The mark should be represented graphically (ie, in paper form);
- The mark should be capable of distinguishing the goods or services and must be unique;
- The mark should be used, or proposed to be used, in relation to goods or services with an intention of indicating, or so as to indicate, a connection in the course of trade between the goods or services.
Now, comes the hard part - denials. Trade Marks Act, 1999 includes the two grounds for the refusal of the trademarks and they are:
1. Absolute grounds for refusal of registration (Section 9)
2. Relative grounds for refusal of registration (Section 11)
So. let’s discuss further each ground for refusals of a trademark application
1. Absolute Grounds for Refusal of Registration
As per the section 9 of the Act, a trademark shall not be registered if the mark:
- lacks any distinctive character i.e. it is incapable of distinguishing the goods or services of one person from those of another person.
- contains offensive terms that are likely to hurt any religious sentiment of any class or section of citizens of India.
- designates the kind, quality, intended purpose, values, geographical origin, or the time of production of the goods or services rendered;
- contains or comprises scandalous or obscene matter.
- is found to deceive the public or cause confusion;
- has something that has become customary in the current language or in the bonafide and established practices of the trade
- have the shape of goods that result from the nature of goods themselves, which is necessary to obtain a technical result; or the shape which gives substantial value to the goods.
- contain words or symbols whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Now, let’s understand what are the relative grounds that lead to rejection.
2. Relative Grounds for Refusal of Registration
There's Nothing New - One of the commonest mistakes that people make is opting for a common name. Generic or descriptive terms have no place in trademark registration because one cannot trademark the word “ice cream”. After all, it is a generic term for the product that anyone has the right to develop.
Also, neither can you trademark descriptive words which means, if you are running a company that manufactures super-soft mattresses, you cannot trademark the word "super-soft mattresses" along with your brand name because it would be just like describing the business.
Similar to an Existing One - With so many trademarks registering every minute, it is highly possible that what you thought to be unique might be already in use. Since a trademark cannot be identical, before applying, search whether such a trademark already exists or not. Run a preliminary trademark search in a domestic trademark registry or if you have intentions of expanding your business overseas, then extend your search globally by approaching the respected registry country-wise, or conduct a basic Google search to avoid unnecessary rejection and clashes later.
Registering into a Wrong Mark - As mentioned before, there are various categories of trademarks, and applying for the wrong one will definitely lead to rejection. Decide first what you want to trademark, whether the logo, design, color, shape, or anything else, and then apply for the same.
Capable of Confusion - If the mark is found to be capable of creating confusion among the public due to the similarity to an earlier identical trademark of goods or services or is identical with an earlier similar trademark of goods or services, then rejection is what you will receive.
Lastly, the usage of the trademark is bound to be prevented by the law of passing off protecting an unregistered trademark used in the course of trade, as well as the law of copyright. The mark must also not be taking any unfair advantage of a similar or identical earlier well-known trademark in India.
Apart from these grounds, there is also a major reason why trademark applications are not reaching the approval stage and that is:
Not hiring a Trademark Expert - Yes you yourself are capable of applying for a trademark registration but, there are a lot of legal aspects that must be taken care of which later turn into roadblocks for your trademark application. Hence, to avoid that, it is advisable to approach an experienced trademark lawyer to guide you through the application to achieve success at the first attempt itself.
Tips to Avoid Getting Your Trademark Refused
We all wish our trademark application to be accepted on the first go but for that, you need to avoid committing the above-mentioned mistakes first. A little homework before applying can save you a lot of your time, effort, and heart breaks. Simply,
- Conduct research before applying
- Resist using misguiding, offensive, or provoking terms
- Make sure you complete your application and submit whatever documents are required
- Or the best and the safest option, consult a trademark law firm for expert guidance and then proceed.
Rejection or Rejoice? You Decide
Registration of trademarks in India is no joke and it must be done systematically and professionally which is why many opt for trademark law firms to do the job. Remember, trademark rejection is not an end, you can always reapply but if you don't want to face rejection, again and again, allow us, Parker and Parker Co. LLP to help you out. We guarantee that with our legal assistance your trademark will get approved in the first attempt without any hiccups.